Jeffrey Feulner, P.A.v.Cordell Practice Management Group, LLC

Trademark Trial and Appeal Board

Oct 26, 2015

No. 92056202 (T.T.A.B. Oct. 26, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Jeffrey Feulner, P.A.

v.

Cordell Practice Management Group, LLC
___

Cancellation No. 92056202
___

Terry M. Sanks, Amber N. Davis and Kevin W. Wimberly of Beusse Wolter Sanks &
Maire, PLLC for Jeffrey Feulner, P.A.

Benjamin Haltenhof of Sandberg Phoenix Von Gontard PC for Cordell Practice
Management Group, LLC.
______

Before Wolfson, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Cordell Practice Management Group, LLC (“Respondent”) owns a Supplemental
Register registration for the mark MEN’S DIVORCE, in standard characters, for
“legal services” (the “Registration”).1 In its amended petition for cancellation,
Jeffrey Feulner, P.A. (“Petitioner”) alleges prior use of MEN’S DIVORCE LAW

1 Supplemental Register Registration No. 4159345, issued June 12, 2012.
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FIRM as a mark, and prior use and ownership of a pending application to register
the mark shown below (with MEN’S DIVORCE LAW FIRM disclaimed)

both for “legal services, namely, providing customized documentation, information,
counseling, advice and consultation services in all areas of divorce and family law.”2
Petitioner also alleges that its application “has been initially rejected based on”
Respondent’s involved Registration. As grounds for cancellation, Petitioner alleges
that continued use of Respondent’s mark is likely to cause confusion with
Petitioner’s marks.3 In its amended answer, Respondent admits that the parties’
marks “may be confusingly similar,” but otherwise denies the salient allegations in
the amended petition for cancellation.
Procedural History and Stipulations
On August 19, 2014, the Board issued an order denying Petitioner’s motion for
summary judgment on its likelihood of confusion claim. 24 TTABVue.4 Therein, the

2 Application Serial No. 85456862, filed October 26, 2011 based on first use dates of
January 1, 2009. The application includes this description of the mark: “The mark consists
of the terms MEN'S DIVORCE which is underlined and beneath the underline the terms
LAW FIRM, to the left of the terms is a square, and inside the square there is a design of a
triangle on the upper left-hand corner, and an ‘S’ design connected to a triangle on the
bottom right-hand corner.”
3 Petitioner also alleged as a separate ground for cancellation that Respondent’s mark is
merely descriptive, but as explained herein, that claim is not viable and has not been
considered.
4 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number,
and any number(s) following “TTABVue” refer to the page number(s) of the docket entry
where the cited materials appear.
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Board informed the parties with respect to Petitioner’s claim that Respondent’s
mark is merely descriptive that such claims are “unavailable against a registration
on the Supplemental Register. … Therefore this proceeding will go forward on the
pleaded Section 2(d) claim only.” Id. at 2-3.
On December 8, 2014, the parties filed a stipulation “that all documents
exchanged by the parties under Rule 34 of the Federal Rules of Civil Procedure are
authentic and may be made of record by either party through a Notice of Reliance
alone.” 30 TTABVue 2. On January 8, 2015, the parties filed a stipulation that
audio files which Respondent produced during discovery would be submitted in the
form of a “textual transcript,” in compliance with their December 8, 2014
stipulation. 31 TTABVue 2.
The Record and Evidentiary Objections
The record consists of the pleadings, by operation of Trademark Rule 2.122(b)
the file of the involved Registration, and the following:
Petitioner’s testimonial deposition of Jeffrey Feulner, its
president and managing attorney (“Feulner Tr.”), and
Exhibit A thereto. 32 TTABVue. Exhibit A to the
deposition is Mr. Feulner’s affidavit submitted in support
of Petitioner’s motion for summary judgment. Although
Respondent did not object to Petitioner’s submission of
the affidavit at trial, Mr. Feulner reaffirmed his
testimony therein and the affidavit is consistent with Mr.
Feulner’s testimony, we rely herein on Mr. Feulner’s
testimonial deposition, rather than his prior affidavit.

Petitioner’s notice of reliance (“Petitioner’s NOR”) on:
Respondent’s discovery responses, including documents
produced during discovery and covered by the parties’
stipulations; Petitioner’s discovery responses, including
documents it produced during discovery, which are
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covered by the parties’ stipulation; information about
Petitioner’s pleaded application printed from the Office’s
TESS database; and the Feulner Affidavit which was also
included with Mr. Feulner’s testimonial deposition. 33
TTABVue.

Respondent did not introduce any testimony or other evidence, or object to any of
the evidence Petitioner introduced.
Facts of Record
Petitioner provides family and specifically divorce law services under its trade
name MEN’S DIVORCE LAW FIRM, which it uses in “all” of its advertisements and
communications with clients and the public. 32 TTABVue 12-16. Petitioner first
used the MEN’S DIVORCE LAW FIRM name in July 2004, and registered it as a
fictitious name with the state of Florida on July 22, 2004. Id.; 33 TTABVue 100-01.
Petitioner’s marketing efforts under the MEN’S DIVORCE LAW FIRM name
have expanded every year since 2004. 32 TTABVue 16. Initially, Petitioner relied on
business cards, Yellow Pages advertisements and “pay-per-click” campaigns, but
later expanded to billboards, television and radio commercials and print, movie
theater and Facebook advertising, all promoting the MEN’S DIVORCE LAW FIRM
trade name. 32 TTABVue 17-21; 33 TTABVue 255-93. Petitioner’s television ads
appeared during the 2010 Winter Olympics. Id. at 37; 33 TTABVue 444-45.
Petitioner’s billboard advertisements were placed “throughout Central Florida,”
including Interstates 4 (which passes by Disney World, Busch Gardens, Sea World
and Universal Studios) and 75 and the road leading to Orlando’s international
airport. Petitioner also placed wall ads in the Orlando Arena, which hosted NBA
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basketball as well as professional lacrosse and arena football games. 32 TTABVue
21-23, 26. Petitioner always displays its MEN’S DIVORCE LAW FIRM name in all
capital letters and uses it “as a brand.” Id. at 30-31. Petitioner’s annual advertising
expenses have increased over time from approximately $2,500 in 2004 to
approximately $140,000 in 2012, and Petitioner has spent a total of over $1 million
on advertising since 2004, virtually all of it including “some use or form of the
‘MEN’S DIVORCE LAW FIRM’” name. Id. at 40-41; 33 TTABVue 624-31. The
following are representative of Petitioner’s promotional efforts:

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33 TTABVue 93, 238.
Mr. Feulner has been interviewed on Fox News. 32 TTABVue 33; 33 TTABVue
192-93. The Orlando Sentinel named Petitioner one of the Top 100 Companies for
Working Families in 2009, 2011 and 2013, listing it not as “Jeffrey Feulner, P.A.”
but instead as “Men’s Divorce Law Firm,” and in 2013 Orlando Business Journal
named Petitioner one of Orlando’s “Best Places to Work.” 33 TTABVue 153-57, 195-
96, 208-39; 32 TTABVue 35-36. The following is a portion of an Orlando Sentinel
article featuring Petitioner dated November 24, 2013:
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33 TTABVue 148.
Like Petitioner, Respondent provides legal services, specifically related to family
and domestic law, and more specifically focused on serving male clients in divorce-
related matters. 33 TTABVue 43-78; 33 TTABVue 649 (Respondent’s response to
Petitioner’s Request for Admission No. 9). In 2004, Respondent, operating under the
trade name CORDELL & CORDELL, sponsored “The Complete Men’s Divorce
Workshop,” addressing child custody and support, and financial concerns in divorce.
33 TTABVue 43-78. Respondent eventually began doing business in Tampa, and
later opened a “satellite office” not only in Orlando, but in the “same neighborhood”
as Petitioner. 32 TTABVue 42; see also Amended Answer ¶ 18 (admitting allegation
that Respondent “opened an office in the exact same location (Baldwin Park) as
petitioner”).
Standing
Petitioner has used the trade name MEN’S DIVORCE LAW FIRM in connection
with legal services since 2004. 32 TTABVue 12-23, 26, 30-31, 33, 40-41; TTABVue
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100-01, 255-93, 444-45, 624-31. This establishes Petitioner’s standing. Books on
Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
(competitor has standing to challenge registration); Kistner Concrete Products, Inc.
v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (same);
Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner
has established his common-law rights in the mark DESIGNED2SELL, and has
thereby established his standing to bring this proceeding.”); Syngenta Crop Prot.
Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer
uses its mark “is sufficient to support opposer’s allegations of a reasonable belief
that it would be damaged …” where opposer alleged likelihood of confusion).
Likelihood of Confusion
This case is essentially a dispute over priority. In fact, there is no doubt that the
parties’ marks are confusingly similar.
Respondent has repeatedly admitted as much. Amended Answer ¶¶ 15, 16
(admitting that the parties’ services are “identical or nearly identical … such that
they would travel and/or be promoted through the same channels of trade for sale
to, and use by, the same class of consumers” and that the marks “may be
confusingly similar”); 33 TTABVue 648-49 (Respondent’s responses to Petitioner’s
Request for Admission Nos. 1-9, admitting, inter alia, that “a likelihood of confusion
exists between Registrant’s mark and petitioner’s mark”). We therefore turn to the
question of priority.

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Priority/Proprietary Rights
Respondent alleges that it used “men’s divorce” prior to Petitioner, based on
offering “The Complete Men’s Divorce Workshop” in 2004. We disagree.
Respondent’s use of the term “men’s divorce” in that context was obviously not to
indicate the source of the workshop, which was the CORDELL & CORDELL, P.C.
law firm, but instead to describe the workshop’s subject matter, men’s divorce. In
fact, as stated in radio advertisements for the workshop:
If you’re a man facing divorce, attend “The Complete
Men’s Divorce Workshop.” Hosting the workshop is
attorney Joe Cordell, author of Civil War: A Dad’s Guide
to Custody and founder of the domestic litigation law firm
Cordell & Cordell … Come see for yourself how Cordell &
Cordell has earned its reputation for vigorously and
successfully defending the rights of men. “The Complete
Men’s Divorce Workshop” sponsored by Cordell & Cordell,
a partner men can count on ….

33 TTABVue 78 (emphasis added). Similarly, the specimen Respondent submitted
in support of registration, which appears to be a website printout, bears the heading
“Men’s Divorce” at the top, but underneath that heading states “Providing divorce
tips for men in the most trying period of their lives.” The site appears to be
informational only, and contains no indication that legal services are provided by an
entity named “Men’s Divorce.” In short, the record in this case contains no evidence
that Respondent ever used “men’s divorce” to indicate source, and the evidence of
Respondent’s use which Petitioner introduced reveals use of “men’s divorce” only in
the context of describing a workshop’s and website’s subject matter.
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As for Petitioner’s use of the term, this case is somewhat unusual in that
Petitioner seeks to cancel a term on the Supplemental Register, based on its alleged
prior use of the registered term in its trade name and alleged service mark.5 The
nature of the term at issue dictates the scope of our analysis.
Specifically, the term at issue is at best merely descriptive. Indeed, “a registrant
owner of a Supplemental Register registration,” in this case Respondent, “impliedly
admits that the registered term was descriptive … at least at the time of the
registrant’s first use of the term.” Perma Ceram Enterprises Inc. v. Preco Indus.,
Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992); In re Hunke & Jochheim, 185 USPQ
188, 189 (TTAB 1975) (“registration on the Supplemental Register may be
considered to establish prima facie that, at least at the time of registration, the
registered mark possessed a merely descriptive significance”). Moreover, in this
case, Respondent conceded during discovery and in its Trial Brief that the
registered term “men’s divorce” was not only descriptive at the time of registration,
but that it remains at least descriptive, and may in fact be generic. 33 TTABVue
651 (Respondent’s responses to Petitioner’s Request for Admission Nos. 16 and 17,
admitting that “men’s divorce” describes “a feature, target consumer, subject
matter, use, and/or nature of Registrant’s legal goods and/or services for Men’s
divorces”); 39 TTABVue 7, 9 (Respondent’s Trial Brief at 6 and 8, stating that
“Registrant had not acquired distinctiveness in the admittedly generic descriptive
mark ‘Men’s Divorce’” and “both Registrant’s mark and Petitioner’s proposed mark

5 In its Trial Brief, Respondent “does not deny that Petitioner has used ‘Men’s Divorce Law
Firm’ as its trade name since July of 2004.” 39 TTABVue 8.
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are as descriptive as can exist”). For its part, Petitioner has also conceded that
“men’s divorce” is at best merely descriptive, as its pending application includes a
disclaimer of “men’s divorce law firm.” In re Carlson, 91 USPQ2d 1198, 1200 (TTAB
2009); Bass Pro Trademarks LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844,
1851 (TTAB 2008). Petitioner’s assertion in its Trial Brief that its alleged word
mark MEN’S DIVORCE LAW FIRM has acquired distinctiveness, 38 TTABVue 20-
25, is also an admission that the alleged mark is merely descriptive. Bass Pro
Trademarks, 89 USPQ2d at 1851.
In Books on Tape, our primary reviewing court considered the relatively rare
circumstance presented here, i.e. the owner of a merely descriptive term seeks to
cancel a Supplemental Register registration for the same term. In that case, the
prior user of BOOKS ON TAPE for the sale of cassette tapes sought to cancel a
Supplemental Register registration for the mark BOOKTAPES for prerecorded
audio tapes for instructional purposes, alleging likelihood of confusion. The Federal
Circuit first reversed the Board’s finding that the petitioner lacked standing
because its alleged mark was held to be generic.6 It then limited the holding of Otto
Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA
1981), that a plaintiff “must prove he has proprietary rights in the term he relies
upon to demonstrate likelihood of confusion” to proceedings challenging registration
on the Principal Register:

6 In this case, neither party has alleged that the other’s alleged mark is generic, and the
issue was neither pled nor tried by implied consent. It is beyond the scope of this proceeding
for us to consider whether “men’s divorce” is generic.
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… the ruling on the merits in Otto Roth, in any event, is
not controlling here. The Otto Roth opposer sought to
prevent the applicant’s registration of an arbitrary mark
on the Principal Register on the basis of prior use of a
descriptive phrase. One who had proprietary rights in a
mark was being attacked by a party who had established
no rights in a mark on the ground that the applicant’s use
would be attributable to opposer. In contrast, this case
concerns a registration for a descriptive term on the
Supplemental Register. The registrant here has as yet no
proprietary rights in a mark …. The statute does not
require the anomalous result that a junior user is entitled
to keep its Supplemental Registration for a descriptive
term in which it has not established secondary meaning
(as evidenced by registration on the Supplemental
Register) because a prior user cannot show secondary
meaning in that term either.

Books on Tape, 5 USPQ2d at 1302.
Similarly, in this case it would be an “anomalous result” if Respondent was
permitted to keep its Supplemental Register registration for an at best highly
descriptive, if not generic term, in the face of Petitioner’s prior use. As in Books on
Tape, Petitioner in this case need not establish secondary meaning in the term
“men’s divorce.”7 Accordingly, the petition to cancel is granted.
Even if Books on Tape were found inapplicable to this proceeding, and Petitioner
was required to establish proprietary rights in its proposed word mark, we would
reach the same ultimate result. To the extent that the term “men’s divorce”

7 We recognize that Books on Tape has been distinguished, perhaps most notably in Towers
v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990), which referred to
the passage quoted above as “dicta.” However, Books on Tape was not and could not have
been overruled by the Towers panel because Towers was not an en banc decision, the
situation in this case is on all fours with that in Books on Tape (but not Towers, in which, as
in Otto Roth, the plaintiff asserted use of a descriptive term against a registration on the
Principal Register) and it is not just the “dicta” but the ultimate result in Books on Tape
which compels a similar result here.
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(including “men’s divorce law firm”) is capable of identifying source, it has acquired
distinctiveness as a source-indicator for Petitioner at least in Central Florida based
on Petitioner’s extensive, expanding use of the term for more than a decade, in
newspapers, on television, radio, and prominent billboards and sports arenas, its
unsolicited media attention and awards and its significant advertising
expenditures. By contrast, there is no evidence that Respondent ever used “men’s
divorce” to identify source, much less that the term has a secondary meaning as
identifying Respondent anywhere. Moreover, Respondent now operates and uses its
alleged mark in the exact same geographic area, in fact in the “same neighborhood”
as Petitioner, where Petitioner has shown secondary meaning. Accordingly, even if
Otto Roth rather than Books on Tape applies, and assuming Petitioner’s trade name
and alleged service mark is not generic, Petitioner has established “priority of
acquired distinctiveness.” Perma Ceram, 23 USPQ2d at 1138.

Decision: The petition to cancel is granted and the Registration will be
cancelled in due course.